An obviousness rejection under Section 28.3 means CIPO believes an average expert in your field would have easily thought of your invention. To overcome this, your patent lawyer must argue that your invention involves an “inventive step” producing unexpected results that are not obvious to a person skilled in the art.
Understanding Obviousness and Inventive Step in Canada
Creating something new is only half the battle when applying for a patent in Canada. Your invention must also be clever enough to deserve a 20-year legal monopoly. When a patent examiner at the Canadian Intellectual Property Office (CIPO) reviews your application, they check if your idea is simply a logical, minor tweak to something that already exists. If they decide your idea is too simple, they will issue an obviousness rejection under Section 28.3 of the Patent Act.
Unlike an anticipation rejection (where one document shows your exact invention), obviousness usually involves the examiner combining two or more older documents (prior art). 🧱 For instance, if an inventor in Vancouver patents a chair, and an inventor in Halifax patents adding wheels to furniture, the examiner might argue that creating a “chair with wheels” is totally obvious. They will claim that any ordinary worker in the furniture industry would have easily figured that out.
Overcoming a Section 28.3 rejection is highly subjective and requires strong legal advocacy. We highly advise consulting a local patent lawyer or registered patent agent from our directory. They know how to properly frame your arguments using Canadian case law to prove that your invention truly required an inventive step.
Step-by-Step Process to Overcome Section 28.3 at CIPO
Fighting an obviousness rejection is essentially a debate with the CIPO examiner. Your patent law firm will follow a structured legal approach to convince the examiner that your invention is not obvious.
Step 1: Identifying the “Person Skilled in the Art” (POSITA)
Canadian law evaluates obviousness through the eyes of a fictional person called the “Person Skilled in the Art” (POSITA). 👨💻 Your lawyer will first define who this person is. This person is unimaginative but knows everything about the industry. If you invented a new software algorithm in Toronto, the POSITA is an average software developer, not an absolute genius like Alan Turing. Defining the POSITA’s skill level is crucial.
Step 2: Analyzing the Examiner’s Combinations
The examiner usually combines a “primary” document with a “secondary” document to reject your claims. Your lawyer will carefully read these documents to see if they actually fit together. Often, an examiner uses the benefit of hindsight-knowing what you invented, they look backwards to piece it together. Your lawyer will point out that without your invention as a guide, the POSITA would never have thought to combine those specific documents.
Step 3: Arguing “Teaching Away”
One of the strongest legal arguments in Canada is “teaching away.” 🚫 This happens when the prior art actually discourages people from making your invention. For example, if older patents explicitly state that combining metal and water is a terrible idea because of rust, but your invention brilliantly combines them without rusting, the prior art taught away from your solution. This proves your idea was highly non-obvious.
Step 4: Providing Evidence of Unexpected Results
If possible, you can submit an affidavit showing that your invention produces surprising, superior results. If your new chemical mixture cures a disease 10 times faster than expected, this “unexpected result” is strong evidence of an inventive step. Your patent lawyer will draft these arguments, amend your claims if necessary, and file the formal response with CIPO.
How Much Does it Cost to Fight an Obviousness Rejection?
Arguing obviousness is generally more legally intensive than arguing simple novelty, which is reflected in the professional fees. All values are in Canadian dollars (CAD).
- CIPO Office Fees: Standard responses do not have a government fee unless you are requesting an extension ($297.00 CAD) or paying excess claim fees.
- Patent Lawyer Fees: Because obviousness arguments require deep technical and legal analysis, lawyer fees for this specific response often range from $2,500 to $6,000 CAD.
- Affidavit Preparation: If you need to hire an expert in Edmonton or Montreal to swear an affidavit proving unexpected results, expect additional costs of $1,000 to $3,000 CAD.
How Long Does the Process Take?
Just like other CIPO office actions, you generally have a strict 4-month deadline to respond to a Section 28.3 obviousness rejection. Once your patent lawyer submits the arguments and amended claims, the CIPO examiner will usually take between 4 and 8 months to review your case and issue their next decision.
Key Concepts in Canadian Obviousness Law
| Concept | Meaning in Patent Law | Impact on Your Case |
|---|---|---|
| POSITA | Person Skilled in the Art. An average, unimaginative worker in your field. | The examiner judges obviousness based on what this fictional person would know. |
| Hindsight Bias | Using your invention as a blueprint to piece older documents together. | Not allowed in Canada. Your lawyer will argue the examiner is using hindsight. |
| Commercial Success | Your product is making millions of dollars because it solved a long-felt need. | Secondary evidence that the invention was actually not obvious to others. |
Frequently Asked Questions (FAQ)
What is the difference between anticipation and obviousness?
Anticipation (Section 28.2) means your exact invention exists in one single prior document; it lacks novelty. Obviousness (Section 28.3) means your invention is new, but the differences are so minor that any average worker in the industry would have naturally thought to make the change.
Can the examiner use a 50-year-old patent to prove obviousness?
Yes. Under the Canadian Patent Act, there is no time limit on prior art. If a patent from 1970 combined with a magazine article from 1990 makes your 2026 invention obvious, the CIPO examiner is legally allowed to use them to reject your application.
Will changing the size or colour of my invention make it non-obvious?
Generally, no. Simply making a known object larger, smaller, or painting it a different colour is considered a routine workshop modification. Unless the new size creates an unexpected, miraculous result that nobody anticipated, CIPO will consider it obvious.
Should I just abandon my patent if I get an obviousness rejection?
You should not abandon it immediately. Obviousness rejections are extremely common first office actions. Most successful Canadian patents received an obviousness rejection at some point. A skilled patent lawyer can often overcome it by narrowing your claims to protect your core inventive step.
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